Solving Solving (Federal Circuit) 5 , a judge construes patent claim - PDF document

US CLAIM CONSTRUCTION Solving Solving (“Federal Circuit”) 5 , a judge construes patent claim terms based on the “objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean.” 6 After the Federal Circuit’s en banc decision in Markman , affirmed by the United States the the riddle Supreme Court, 7 claim construction may take place at a separate hearing riddle (a “ Markman hearing”) and should be done before trial. The Markman hearing occurs in front of a judge; no jury is present. That judge then construes the claims as they would be understood by the hypothetical person: one of ordinary skill in the art (“OOSITA”). But, who determines the standard for this hypothetical OOSITA? And, if a judge construes the claims as they would be understood by OOSITA, then shouldn’t we know who OOSITA is before ruling on claim construction? Therein lies the riddle. Case law remains unclear on whether the determination of OOSITA should be done by a judge or a jury. While the majority of precedent supports the determination of OOSITA as a factual question, surprisingly few cases have analysed the issue. 8 A few analogous cases, discussing patent validity, have held that the level of ordinary skill in the art is a factual question. 9 Determination of who satisfies OOSITA presupposes that one knows the level of ordinary skill in the appropriate art, which implies that the determination of OOSITA at least includes underlying factual considerations. However, a factual OOSITA creates problems and tensions with a purely legal claim construction, especially when that claim construction is done by the judge prior to trial but the determination of the level of ordinary skill in the art is made by a jury at a later date. 10 As a pure matter of law, claim construction generally should be resolved by looking at the intrinsic evidence: “It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.” 11 The intrinsic evidence was considered by the United States Patent and Trademark Office (“PTO”) during examination of the patent K Who is “OOSITA”? application. Such intrinsic evidence is the most significant source of the proper meaning of disputed claim language. 12 In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a Meredith Martin Addy and Artem N. disputed claim term. An analysis of the intrinsic evidence, however, Solokov analyse the “one of ordinary skill does not specifically involve a determination of OOSITA. Extrinsic evidence, on the other hand, includes things that were not in the art” test in US patent cases previously considered by the PTO but may help determine the I n the United States, patent cases may be tried to a jury. However, meaning of a claim term. Extrinsic evidence may include, for example, the jury does not decide every issue. Many issues are resolved by expert testimony, technical treatises, and dictionaries. When the the judge before, and throughout, the trial. As a general rule, legal intrinsic evidence is clear, the Federal Circuit has held that reliance on extrinsic evidence to interpret a claim term is improper. 13 In those issues are decided by the judge, and factual issues are left for the jury to decide after trial. The jury resolves the factual issues and applies the cases, extrinsic evidence may be heard as background information or to law, as provided by the judge, to the facts. educate the court, but the court cannot rely on such evidence if it Patent infringement is a question of fact, usually for the jury to contradicts the unambiguous meaning of a claim term as determined determine. The analysis of whether an accused device or process by the intrinsic evidence. 14 infringes a patent is a two step inquiry 1 . First, the patent claims at issue Hence, in ruling on claim construction, the court reviews the intrinsic are construed to determine their meaning. Second, the claims, as evidence as presented by the parties. The court may rule based on the construed, are applied to the accused device or method 2 . briefs of the parties or may order a Markman hearing at which the parties The first step in the infringement process, claim construction, is a pure present argument on what the patent claim terms should mean. Because question of law 3 . Indeed, it has no underlying factual components 4 . extrinsic evidence in most cases should not be necessary, the court usually According to the United States Court of Appeals for the Federal Circuit does not hear from experts on the meaning of claim terms. The claim In summary K As a general rule, in US patent cases legal issues are decided by the judge and factual issues by the jury K Claim construction is a question of law, and a judge construes patent claim terms based on the objective test of what “one of ordinary skill in the art” (OOSITA) at the time of the invention would have understood the term to mean K However, case law remains unclear on whether the determination of OOSITA itself should be done by a judge or a jury www.ipworldonline.com July/August 2006 | Patent World #184 | 23